MEXICO Law and Practice Contributed by: Luis Álvarez Cervantes, Adolfo Athié Cervantes, Alejandro Barrera, Jesús Colunga, Eduardo Kleinberg, Juan José López de Silanes, Carlos Martínez-Betanzos and Amílcar Peredo, Basham, Ringe y Correa S.C.
To obtain an injunction, a prima facie current or immi - nent infringement must be shown. In addition, awards for damages can be sought in two ways. First, upon the successful completion of a trade mark infringement proceeding, the plaintiff can ask the IMPI to initiate an ancillary proceeding to award damages. Alternatively, the plaintiff may resort directly to a civil judge and ask for damages to be awarded. Lastly, certain forms of trade mark infringement, par - ticularly those performed on a commercial scale, are federal crimes punishable by fines and up to ten years of imprisonment. It is possible for the owner of the infringed trade mark registration to also submit a criminal complaint to initiate an investigative process by the General Attorney’s Office that may culminate in a criminal conviction. It is important to consider that ambush marketing has been codified as a specific form of trade mark infringement in a recent legal reform. 7.3 Industrial Designs An industrial design in Mexico is understood as any combination of shapes, lines, colours, or three-dimen - sional forms incorporated into a product that give it a special appearance without altering its function. The law recognises two categories: industrial drawings, which are combinations of figures, lines or colours incorporated into a product to give it a distinctive appearance, and industrial models, which are three- dimensional shapes that serve as patterns for manu - facturing a product, giving it a special appearance. The term of protection for an industrial design is five years from the filing date, renewable for successive periods of the same duration up to a maximum of 25 years. Renewal fees must be paid within the estab - lished time limits, and a six-month grace period is available subject to a surcharge. Registration is carried out before the IMPI. The pro - cess begins with the filing of an application, either electronically or in person, which must include the applicant’s information, drawings or photographs of the design, a description and proof of payment of fees.
The registration of an industrial design grants its holder the exclusive right to use it and to prevent third parties from manufacturing, selling or importing products incorporating the design without authorisa - tion. Enforcement is handled through IMPI, which has authority to conduct inspections, order the seizure of infringing goods, impose administrative sanctions, and issue precautionary measures to stop infringing acts. Remedies available to the holder of a registered industrial design include injunctions, the seizure and destruction of infringing goods, the imposition of administrative fines, and the possibility of claiming damages before the courts once IMPI’s infringement resolution is final, with the law establishing a minimum compensation equivalent to 40% of the retail price of each infringing product. 7.4 Copyright Mexico protects all works of original creation and is party to the Berne Convention. As such, all produc - tions in the literary, scientific and artistic fields can be subject to copyright protection in Mexico. Term of Protection Copyright protection in Mexico will last for the life of the author plus 100 years. The author in Mexico is always an individual and it can never be a legal entity, though a legal entity could own the copyright through an assignment or a work-for-hire agreement. Ownership In principle, the author of the work is the original own - er of the copyright. For works made for hire under a written agreement, the owner will be the party that commissions the work. Assignments Copyright assignments in Mexico must be made invariably in writing. Verbal assignments are null. The assignment must foresee a payment in favour of the assignor. Registration Mexico is a party to the Berne Convention and pro - tects works from the moment of fixation. However, it is possible to record works and agreements related
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